Dell Inc. v. hulya vatansever
Claim Number: FA1807001798776
Complainant is Dell Inc. (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas, USA. Respondent is hulya vatansever (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <delldriver.net>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 26, 2018; the Forum received payment on July 26, 2018.
On July 27, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <delldriver.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 27, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@delldriver.net. Also on July 27, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 20, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Dell Inc., is a world leader in the field of computers and related products. Complainant has rights in the DELL trademark based upon its longstanding use as well as its registration of the mark with the United States Patent and Trademark Office ("USPTO”), the Turkey Patent and Trademark Office, and other government offices. Respondent’s[i] <delldrivers.net> domain name is confusingly similar to Complainant’s mark because Respondent includes the entire DELL mark in the domain name and adds the generic term “driver” and the “.net” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <delldriver.net> domain name because Respondent fails to use the name in connection with a bona fide offering of goods and services or to make a legitimate noncommercial or fair use. Additionally, Respondent is not commonly known by the disputed domain name and is not authorized or licensed to use Complainant’s mark in any fashion. Rather, Respondent uses the disputed domain name’s resolving webpage to pass itself off as Complainant and host download links for counterfeit, pirated or malicious software, as well as to phish for users’ personal information.
Respondent had actual knowledge of Complainant’s rights in the DELL mark prior to registering the disputed domain name and it registered and uses the <delldriver.net> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name’s webpage which features Complainant’s DELL mark in connection with a phishing scheme and download links for counterfeit, pirated or malicious software.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the DELL trademark based upon its registration of the mark with certain government entities. It submits examples of its trademark registration certificates, for the DELL mark, from the United States Patent and Trademark Office (“USPTO”), and the Turkey Patent and Trademark Office. Registration with such national government offices is sufficient to establish complainant’s rights in a trademark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant also submits evidence of its actual and globally extensive use of the DELL mark. In light of the evidence submitted, the Panel finds that the Complainant has rights in the DELL mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <delldriver.net> domain name is confusingly similar to Complainant’s mark because Respondent includes the entire DELL mark in the domain name and merely adds the generic term “driver” and the “.net” gTLD. The addition of a generic term is not sufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”) In this case, the addition of a term that is directly relevant to the Complainant’s business can actually enhance confusion. In a recent case involving the domain name <delldrivers.net>, the Panel held that “the addition of the word ‘drivers’ in the disputed domain name adds to the confusion with Complainant’s trade mark.” Dell Inc. v. Asri Fahmi / drivers.inc, FA 1799045 (Forum Aug. 11, 2018).
Additionally, the inclusion of a gTLD is irrelevant under a Policy ¶
4(a)(i) analysis. See Verragio,
LTD. v. Lance Liao,
FA 1445159 (Forum July 5, 2012) (“Respondent’s
<verragio.net> domain name is identical to Complainant’s VERRAGIO mark,
since Respondent has merely added the generic top-level domain (“gTLD”) ‘.net.’”).
Consequently, the Panel finds that Respondent’s <delldriver.net>
domain name is confusingly similar to Complainant’s DELL mark under
Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in doing so, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant alleges that Respondent fails to use the <delldriver.net> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant asserts that Respondent uses the disputed domain name to divert internet users to Respondent’s webpage featuring software download links associated with Complainant’s products and third-party advertisements. Use of a domain name to pass oneself off as a complainant in order to distribute counterfeit, unauthorized or malicious software may not be considered a bona fide use under Policy ¶¶ 4(c)(i) and (iii). See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”). Here, Complainant provides screenshots of webpages associated with the <delldriver.net> domain name. The site’s extensive use of the DELL mark creates the foundation upon which the Complainant asserts that the Respondent attempts to trick users into believing there is an association between Complainant and the website. Further, in the submitted screenshots it is seen that the footer on each of the site’s page displays the notice “© 2008 DELL Drivers & Downloads.” The appearance of this notice supports the position that Respondent is attempting to pass itself off as the Complainant.
Complainant also alleges that Respondent’s purpose in passing itself off as Complainant is to trick users into downloading counterfeit, pirated or malicious software through the download links on Respondent’s webpage and to encourage users to click on advertisements for third-party commercial sites that appear on the site. Unauthorized and improper use of copyright protected material, such as product images and software, has been viewed, along with all the circumstances of a give case, as failing to support any rights or legitimate interests in a disputed domain name. Guru Denim LLC d/b/a True Religion Brand Jeans v. Bruno Migliozzi, FA 1796493 (Forum August 15, 2018) (finding the respondent did not use the at-issue domain name for a bona fide offering of goods or services where “the resolving website includes a copyright notice that identifies ‘True Religion Brand’ as the copyright owner and displays copyrighted images owned by Complainant.”). Also, the third-party commercial advertisements that appear on the <delldriver.net> site (such as “Driver Reviver” and “MacKeeper”) are not viewed as bona fide offerings since Respondent is using the DELL mark to promote such third-party goods and services – presumably for click-through revenue. Homer, TLC Inc. v. Lorna Kang, FA 573872 (Forum, November 22, 2005) (“Respondent’s use of domain name that is identical to Complainant’s mark to divert Internet users to third-party websites for Respondent’s own commercial gain does not constitute a bona fide offering ... or a legitimate noncommercial or fair use ....”) As such, the Panel agrees that Respondent is attempting to pass itself off as Complainant and this does not confer any rights and legitimate interests in the <delldriver.net> domain name for the purposes of Policy ¶¶ 4(c)(i) & (iii).
Additionally, Complainant asserts that Respondent operates a phishing scheme using the comment submission form featured on the <delldriver.net> webpage. Use of a disputed domain name in connection with a phishing scheme is not considered to be a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and (iii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent lacked rights and legitimate interests in a domain name with which it conducted a phishing scheme to procure “Internet users’ personal information”). Here, Complainant provides screenshots of the <delldriver.net> domain name’s resolving webpage which features a comment submission form, soliciting the user’s name and email address.
In light of the evidence presented, and in the absence of any countervailing evidence, arguments, or other submission from the Respondent, the Panel concludes that the Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant further argues that the Respondent lacks rights and legitimate interests in the <delldriver.net> domain name because Respondent is not authorized or licensed to use Complainant’s DELL mark and is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii) to help with a rights and legitimate interests analysis. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization from complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug, 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). In the present case, the Panel notes that the WHOIS record for the <delldriver.net> domain name[ii] identifies the Respondent as “hulya vatansever,” and no information in the record shows that Respondent is known otherwise or was authorized to use Complainant’s DELL mark in any way. Accordingly, the Panel concludes that the Respondent lacks rights and legitimate interests in the <delldriver.net> domain name under Policy ¶ 4(c)(ii) and thus, ¶ 4(a)(ii).
Complainant asserts that Respondent had actual knowledge of Complainant’s rights in the DELL mark prior to Respondent’s registration of the <delldriver.net> domain name. Actual knowledge of a complainant’s rights in its mark may support a finding of bad faith under Policy ¶ 4(a)(iii). See WordPress Foundation v. mich delorme / mich d dots tlds, FA1410001584295 (Forum, Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”). Here, Complainant provides screenshots of certain webpages associated with the <delldriver.net> domain name which show Respondent displaying the DELL mark and offering software download links. Each page of the website also displays a copyright notice that mentions “DELL Drivers & Downloads.” Therefore, the Panel concludes that the Respondent had actual knowledge of Complainant’s rights in the DELL mark prior to registration, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
Complainant next claims that Respondent registered and uses the <delldriver.net> domain name in bad faith. Specifically, Complainant alleges that Respondent uses the disputed domain name to attract users for commercial gain by attempting to pass itself off as the Complainant and offer counterfeit, pirated or malicious software as well as third-party commercial advertisements. Use of a domain name to pass oneself off as a complainant in order to provide counterfeit software can be evidence of bad faith under Policy ¶ 4(b)(iv). See Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (determining that the respondent’s offering of counterfeit versions of the complainant’s software creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv)). Also Microsoft Corporation v. Rojon Danile / Psttavge, FA 1727547 (Forum June 1, 2017) (bad faith registration and use found where “Respondent is attempting to commercially benefit from the goodwill associated with Complainant’s marks through the use of Complainant’s marks and sale of counterfeit versions of Complainant’s software.”). Here, Complainant provides screenshots of the <delldriver.net> domain name’s resolving webpage which features Complainant’s mark in connection with software download links. Complainant claims that these download links are for counterfeit, pirated or malicious software associated with Complainant’s products and the Respondent has not submitted any evidence or statement to the contrary. Further, the appearance of third-party commercial advertisements at the <delldriver.net> site supports the position that commercial gain is sought by Respondent.
Additionally, Complainant argues bad faith based on Respondent’s use of a comment submission form for a “phishing” scheme. Use of a Complainant’s mark at a disputed domain name in furtherance of a phishing scheme may indicate bad faith registration and use under Policy ¶ 4(a)(iii). Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant provides screenshots of the disputed domain name’s resolving webpage featuring a comment submission form which solicits the user’s name and email address. Complainant claims that such information is being gathered for improper purposes and that Respondent may commercially benefit by abusing this information and/or by selling this information to third parties. With no opposing evidence of submission before it, the Panel concludes that Respondent used the disputed domain name to phish for Complainant’s customers’ personal information and promote third-party commercial advertisements, thereby supporting a finding of bad faith under Policy ¶ 4(b)(iv) and, thus, ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <delldriver.net> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: August 21, 2018
[i] The Panel notes that the annexes to the Complaint did not include a copy of the Whois record for the <delldrivers.net> domain name. However, as this information is publicly and readily available, the Panel retrieved a copy of such record and is satisfied that this case is being brought against the correct Respondent and involves the correct registrar. Complainant is advised to supply such critical evidence as an annex in its future UDRP cases.
[ii] As noted, infra, the Panel independently reviewed the Whois record for the disputed domain as no screenshot of this record was provided as an annex to the Complaint.
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